Granting Motion to Deem Response Timely Filed IPR2014-00148

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Takeaway: A late filing may be excused either on a showing of good cause or upon a Board decision that consideration on the merits would be in the interests of justice.

In its Decision, the Board granted Patent Owner’s Motion to Deem the Response Timely Filed.  At the same time, the Board extended Due Date 2 by a day.  Due Dates 3-7 remain as originally scheduled.

Patent Owner’s Response to the Petition had been due on August 18, 2014.  The person handling the filing for Patent Owner began filing the Response at 11:45 p.m. on that day.  However, due to “technical difficulties” relating to the USPTO Patent Review Processing System (PRPS), the person handling the filing was unable to complete the filing until 12:31 a.m. on August 19, 2014.  In other words, the Response was filed 31 minutes late.

In view of these events, Patent Owner filed a Motion to Deem the Patent Owner’s Response to the Petition to be Timely Filed.  Petitioner opposed the motion and asked that the Response be expunged.  As an alternative, if the Board were to grant Patent Owner’s motion, Petitioner asked that Due Date 2 be changed from October 22, 2014 to November 12, 2014.

The Board began its analysis by referring to 37 C.F.R. § 42.5(c)(3) for the proposition that a late filing “will be excused either on a showing of good cause or upon a Board decision that consideration on the merits would be in the interests of justice.”  The Board also noted that “Due Date 1 is not a statutory deadline; rather, it is an intermediate deadline that may be changed by agreement of the parties.”  After weighing the potential prejudice to Petitioner that could result from the 31 minute delay versus the potential prejudice to Patent Owner of not considering the Response, the Board ruled that excusing Patent Owner’s late filing would be in the interests of justice.  The Board concluded by making statements that suggested it is not ideal to begin a filing process so close to a deadline.

Standard Innovation Corporation v. Lelo, Inc., IPR2014-00148
Paper 19: Decision on Patent Owner’s Motion to Deem Filing of Patent Owner Response as Timely

Dated: September 15, 2014

Patent 7,749,178 B2

Before: Phillip J. Kauffman, Jacqueline Wright Bonilla, and Christopher L. Crumbley
Written by: Kauffman